Securing Optimum Results

The work of our trademark and patent prosecution lawyers and agents is complimented by a robust litigation team of attorneys, which is responsible for winning significant decisions in Philippine courts.

 Some of our cornerstone cases include:

• Our attorneys represented the PHILIPS brand against a copycat (PHILITES) in an appeal filed with the Office of the Director General from a case which we lodged with the Bureau of Legal Affairs pleading three causes of action, i.e., copyright infringement, unfair competition and trademark infringement. Our client was awarded Php 100,000 in nominal damages, Php 300,000 in exemplary damages, and Php 500,000 in attorney’s fees. While the factual issue of similarity in the designs is routinely determined through a simple side-by-side comparison of the actual “PHILIPS” and “PHILITES” packaging, what is significant, is the willingness of the Director General to entertain three different intellectual property rights violation claims in one act of infringing reproduction, and to rule for all three. He ruled that: “While the unauthorized reproduction of the “HAND LOGO” design is a form of trademark infringement, the reproduction of this design in the appellee’s packaging design is a copyright infringement of the drawing of the HAND LOGO design which also forms part of the packaging design owned by the appellant.”Noteworthy was the Director General’s willingness to apply civil law principles on normal damages in cases before the administrative jurisdiction of the Intellectual Property Office. Although he would pronounce that appellants failed to prove profits earned by the appellee for its sale of light bulbs using the infringing packaging—which would be the basis to compute actual damages—he nevertheless conceded that damage was anyway inflicted and in the absence of proof, he awarded nominal damages.The Court of Appeals sustained the ruling of the Director General. A Motion for Reconsideration remains pending.

• The lawyers at Federis represented the UNIVERSAL brand owned by Universal City Studios, Inc. in an opposition against an application for an identical trademark by a local company. The applicant knew of the opposer’s prior registration but defended its application based on earlier cases where courts have allowed the registration of identical trademarks provided the competing trademarks are used in connection with different goods. On the strength of the testimony of a witness who was knowledgeable of the local music business, it was established that at the time the application was filed by the applicant it was aware that UNIVERSAL was a trademark already owned and previously appropriated by the opposer.This prior knowledge devalued the application and the application was ultimately rejected because it was filed in bad faith. In addition, evidence was presented tracing the background of opposer as a giant in the movie industry as well as in the field of music, establishing that film and music are related in the opposer’s field of business.For good measure, Federis offered the argument that technology has now reduced the fixed form of films and music into one digitized vehicle. This vehicle is now the form in which film and music are distributed. This argument concluded that film and music recordings are very closely related and travel the same channels of trade.The case is currently on appeal with the Director General.

• Our attorneys successfully represented the trademark PAUL FRANK & Device in an opposition filed against an application for an identical trademark. The applicant relied on the lack of presence of the opposer’s goods in the local market as justification to copy their trademark for use in connection with the same goods. To obviate use as an issue, a bad faith argument using res ipsa loquitur was raised at the first instance, pointing to the fact that there is no explaining the exact similarity in the contending marks. The only conclusion available is that the applicant copied the mark because of its success and goodwill.In the course of proving goodwill, allusion was made to the popularity of the opposer’s goods, which is evident by their worldwide presence in the market and on the Internet. It is this last point which makes this case notable because the judge accepted this fact as proof that through the Internet a trademark gains well-known status, and renders the unauthorized applicant in bad faith as he thereby gains prior knowledge of the disputed trademark’s true ownership.

• In an opposition case which we won for YAHOO! against a third party’s application for YAAHOO which covered snack foods in Class 30, we successfully obtained an official declaration that YAHOO! is a well-known trademark and as such, was entitled to an expanded protection under Section 123.1(f) of the IP Code. Both the Bureau of Legal Affairs and the Director General concluded that the applicant’s YAAHOO is visually and aurally similar to YAHOO! The decision of the Director General was affirmed by the Court of Appeals.Unlike other countries in Asia that has a system for obtaining a declaration of well-known status outside the context of an actual case, in the Philippines, such declaration can only arise from an actual case involving actual dispute brought before a court, a quasi-judicial body or an administrative body having jurisdiction to hear the case. Therefore the declaration made by the Bureau of Legal Affairs, the Office of the Director General and the Court of Appeals with regard to the status of YAHOO! being well-known is extremely significant. The well-known status comes with statutory perks which include the expanded protection which will now allow YAHOO! to be used offensively against unauthorized users or applicants for similar trademarks even if the latter are used and/or registered in connection with goods or services not covered by YAHOO!’s registrations. Being a widely popular trademark, YAHOO! is constantly being illegally copied and used in connection with a variety of goods and services. Its declaration as a well-known trademark enhances Yahoo!’s ability to enforce its rights against these infringers.

• We successfully represented the SCRABBLE trademark in a cancellation petition where the distinctiveness of the trademark was squarely put in issue. When J.W. Spear & Sons, Ltd. sent a cease and desist letter to the local company, the latter filed a petition to cancel the registration for SCRABBLE claiming that it is descriptive or even generic for the products comprising of word games on letter tiles played on a board. The petitioner pointed out that the certificate of registration itself described the goods identified as “games for scrabble (plastic letter tiles).” However, the judge took judicial notice of subsequent registrations issued for “SCRABBLE” in favor of J. W. Spear & Sons, Ltd. which proved that “SCRABBLE” is a distinctive designation or source indicator. The judge noted that the presence of the word “scrabble” in the description of the goods in the registration being assailed “reflects the mistake of an individual examiner and to that end such description is ineffective and should be rectified.” The decision declaring SCRABBLE to be a distinctive trademark was upheld all the way to the Court of Appeals whose decision became final.

• Our lawyers successfully represented the EUCERIN trademark against an attempt by a local company to copy the mark in an application to register EUROCIN in connection with goods in Class 5. The Bureau of Legal Affairs rejected the application because the latter is confusingly similar to EUCERIN covering goods in Classes 3 and 5. This decision is significant for trademark owners because it undermines a previous ruling by the Supreme Court, where the argument was made that confusing similarity is remote where the goods involved are medicines since buyers will be more alert and careful of the medicine brand that they are using.

• Our IP attorneys represented Philip Morris’ MARLBORO’s ROOF DEVICE from a third party’s attempt to copy and register an imitation of the Roof Device and use it in connection with cigarettes. The applicant’s trademark was an inverted representation of a roof which is used along with the words COUNTRY INTERNATIONAL and used a product packaging that has the same red and white color scheme that is used for the MARLBORO and ROOF DEVICE. The applicant’s attempt to differentiate its trademark from MARLBORO’s ROOF DEVICE was shown by its addition of the words COUNTRY INTERNATIONAL written next to its inverted roof device. The opposition was initially rejected but on appeal to the Director General, the applicant’s trademark was determined to be confusingly similar to the opposer’s registered trademarks, namely, MARLBORO AND ROOF DEVICE, MARLBORO COUNTRY and COME TO MARLBORO COUNTRY. The decision noted that the appropriation of the word “COUNTRY” which is an important element of opposer’s registered trademarks, the use of the same red and white color scheme, and the use of a geometric figure consisting of five sides with two sloping lines [forming an inverted roof design], all taken together, give the applicant’s trademark enough similarities with opposer’s trademarks that can potentially create a likelihood of confusion among the purchasing public.As of this writing there is no word yet on whether the applicant will be appealing the decision of the Director General.

Strong IP Protection

Our attorneys often takes over legal representation in important IP litigation that larger IP firms were handling. Our lawyers can step in, even at a critical stage of the proceedings, and assume the management of large trademark and patent portfolios.

Our impressive roster of clients, local and international, leaves little doubt that our firm has become a reliable ally in the Philippines to businesses whose growth and leadership relies upon a strong protection for intellectual property rights.

• Federis was recognized as one of the top law firms for patent prosecution and trademark/copyright litigation by Managing IP World IP Survey.
  
• Our firm and managing attorney were lauded by the World Trademark Review 1000.
  
• Asialaw Profiles cited Federis’ managing partner, Mila Federis, as one of the leading lawyers in the Philippines.
  
• Our managing attorney was listed as an expert in Trademark law by Who’s Who Legal: Trademarks Edition.
  
• The firm and its lawyers were identified by Legal’s Finest as an expert in Patent law.
  
• Expert Guides identified the Firm and its attorneys as expert in Trademark Law and Women in Business Law.
  
• Our firm is the exclusive contributor to the Philippines chapter of Getting the Deal Through: Patents and Getting the Deal Through Trademarks.
  
• The firm and the Managing Partner have been recommended as experts in intellectual property law by Global Law Experts.

• IP Law Experts recognized and endorsed the firm and its lawyers as an expert in IP law in the Philippines.